Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. Web Services Pty / Aditya Roshni
Claim Number: FA1406001563761
Complainant is Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Web Services Pty / Aditya Roshni (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com>, registered with BigRock Solutions Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2014; the National Arbitration Forum received payment on June 10, 2014.
On June 10, 2014, BigRock Solutions Ltd. confirmed by e-mail to the National Arbitration Forum that the <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com> domain names are registered with BigRock Solutions Ltd. and that Respondent is the current registrant of the names. BigRock Solutions Ltd. has verified that Respondent is bound by the BigRock Solutions Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bedbathbeynd.com, postmaster@bedbathbeyoond.com, postmaster@bedbathsbeyond.com, postmaster@bedbbathbeyond.com. Also on June 16, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has, for many years, used the BED BATH & BEYOND mark in connection with the provision of retail services and consumer goods. Complainant’s interest in the BED BATH & BEYOND mark is enforceable due to its United States Patent and Trademark Office ("USPTO") registrations (e.g., Reg. No. 1,831,709 registered Apr. 19, 1994). These domain names are confusingly similar to the BED BATH & BEYOND mark in that they all differ from the mark by incorporating a generic top-level domain ("gTLD") and by either adding or deleting a single character into the mark. The removal of spacing and punctuation from the mark is not dispositive.
2. Respondent has never been commonly known by the <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com> domain names. First, the WHOIS information does not list any name similar to the domain names. Second, Respondent has never received Complainant’s approval to use the BED BATH & BEYOND mark in Internet domain names.
3. Respondent has made no bona fide use of any of these <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com> domain names. The only apparent use of these domain names is to send Internet users to websites promoting hyperlinks to third-party commercial websites.
4. Respondent’s actions amount to bad faith. First, Respondent has engaged in prior acts that amount to bad faith registration of domain names. See Compl., at Attached Ex. N. Second, Respondent is hosting competing advertisements on this website in an effort to disrupt Complainant’s BED BATH & BEYOND business. Third, Respondent’s use of confusingly similar domain names for the hosting of competing advertisements suggests an intent to profit from the likelihood Internet users will be confused as to Complainant’s association with the website. Finally, Respondent is typosquatting all of these domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) of Union Township, NJ. Complainant is the owner of domestic registrations for the BED BATH & BEYOND mark for various classes of linen products, housewares and related consumer goods and services both in real space and online. Complainant has used the mark continuously in the above manner since at least as early as 1994.
Respondent is Web Services Pty / Aditya Roshni, of New Delhi, India. Respondent’s registrar’s address is listed as Mumbai, India. The Panel notes that the earliest date on which a disputed domain name was registered was August 26, 2006.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims it has, for many years, used the BED BATH & BEYOND mark in connection with the provision of retail services and consumer goods. Complainant states its interest in the BED BATH & BEYOND mark is enforceable due to its USPTO registrations (e.g., Reg. No. 1,831,709 registered Apr. 19, 1994). The Panel finds that the USPTO registration satisfies Policy ¶ 4(a)(i)’s required showing of rights, even if Respondent is domiciled in India. See, e.g., Priceline.com, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1547179 (Nat. Arb. Forum Apr. 24, 2014) (finding that USPTO registration satisfied Policy ¶ 4(a)(i), even when the respondent was located in Saint Vincent and the Grenadines).
Complainant further claims these domain names are confusingly similar to the BED BATH & BEYOND mark in that they only differ from the mark by incorporating a gTLD and by either adding or deleting a single character into the mark. Complainant claims the removal of spacing and punctuation from the mark is not dispositive. The panel notes that removal of spacing, affixations of gTLDs, and the removal of punctuation from a mark are viewed as non-substantive. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). The Panel further finds that when compared to the BED BATH &BEYOND mark, the mere typographical misspellings embodied in the <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com> domain names are sufficient to establish confusing similarity. See, e.g., Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that all of the domain names are confusingly similar to the BED BATH & BEYOND mark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant first claims Respondent has never been commonly known by the <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com> domain names. First, Complainant notes the WHOIS information does not list any name similar to the domain names. Second, Complainant claims Respondent has never received Complainant’s approval to use the BED BATH & BEYOND mark in Internet domain names. The Panel notes the record indicates that “Aditya Roshni / Web Services Pty” is the listed registrant of record in this WHOIS information. The Panel finds there is no evidence here to merit a decision for Respondent under Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant argues Respondent has made no bona fide use of any of these <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com> domain names. Complainant states Respondent’s only apparent use of these domain names is to send Internet users to websites promoting hyperlinks to third-party commercial websites. The Panel notes that all of the domain names resolve to websites featuring links to other commercial websites, including websites with competing retail goods in the areas of “home and bath” style products. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel agreed that the mere offering of commercial hyperlink advertisements was insufficient to create a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel here finds that the <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com> domain names are being used in an inappropriate manner thereby conferring no rights of legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant notes that Respondent has engaged in prior acts that amount to bad faith registration of domain names. The Panel is advised of these prior adverse UDRP proceedings. See McAfee, Inc. v. Web Services Pty / Aditya Roshni, FA 1439614 (Nat. Arb. Forum May 21, 2012); Cafepress.com, Inc v. Web Services Pty c/o Aditya Roshni, FA 1271229 (Nat. Arb. Forum Aug. 7, 2009); Newmont Mining Corporation v Web Services Pty c/o Aditya Roshni, FA 1106525 (Nat. Arb. Forum Dec. 27, 2007). Prior UDRP panels have considered past findings of bad faith under the UDRP as useful evidence of bad faith in a current proceeding under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”). The Panel here finds that the current registrations of the <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com> domain names align with Respondent’s prior behavior of violating Policy ¶ 4(b)(ii) bad faith registration.
Complainant further argues that Respondent is hosting competing advertisements on its websites in an effort to disrupt Complainant’s BED BATH & BEYOND business. The Panel notes that among the offerings viewable on these disputed domain names’ websites, are links to various third-party competitors such as “Pottery Barn” or “Overstock.” The Panel finds that these links constitute an attempt to disrupt Complainant’s business and thus serve as evidence of Policy ¶ 4(b)(iii) bad faith registration and use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant also believes that Respondent’s use of confusingly similar domain names for the hosting of competing advertisements suggests an intent to profit from the likelihood Internet users will be confused as to Complainant’s association with the website. The Panel again notes that the hyperlinks viewable on the websites associated with the disputed domain names’ take Internet users to third-party websites of which Complainant has no control. In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) the panel found such hyperlinks to present evidence of Policy ¶ 4(b)(iv) bad faith. The Panel here finds that Respondent’s use of confusingly similar domain names to promote various advertisements reflects an intent to profit (by way of advertising revenue) off the likelihood Internet users are visiting these confusingly similar domain names out of a mistaken association of the domain names with Complainant, thus illustrating Policy ¶ 4(b)(iv) bad faith use.
Complainant claims Respondent is typosquatting all of these domain names. The Panel notes that as a general rule, typosquatting is the practice of taking another’s trademark and introducing common or subtle spelling errors so as to create a domain name that has no point of reference beyond being a misspelling of the original mark. See, e.g., Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain.”). The Panel here finds that the <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com> domain names do little beyond alter the domain names by a single character (deletion of the ampersand and spacing excluded) and as such Respondent was typosquatting when he registered the names. The Panel thus finds that Respondent’s conduct provides additional evidence of bad faith under the totality of the circumstances of Policy ¶ 4(a)(iii).
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bedbathbeynd.com>, <bedbathbeyoond.com>, <bedbathsbeyond.com>, and <bedbbathbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 29, 2014
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